“Tis’ the era of outsourcing!”

And there’s nothing particularly wrong with it.

This is especially true for In-house counsels and Patent Attorneys who are trying to find prior art to save their clients’ royalty dollars in litigation.

An amazing strategy, finding prior art for a patent being infringed, despite ingenuity, can get quite onerous and demand tact and expertise to land a solid prior art.

With multiple hats to wear, it’s no wonder Law firms and IP counsels often choose to outsource their prior art searches(or any search, for that matter) to consultancies that specialize in the task. As they say, “Let the experts handle what they are best at.”

However, it is often seen that law firms and counsel don’t rely on a single search vendor. The same prior art search could be assigned to two companies, and one might come up with strong prior art that could deem a patent invalid, whereas the other might send a “No Results Found” along with their bill.

Since this has become so commonplace, before outsourcing their work, Attorneys and counsels often have these questions lurking in their minds while assigning a search project to a vendor –

• Will I get good quality work?
• Will my work be considered with utmost importance?
• Will they devote sufficient time to my work?
• Will they propose something or brainstorm with me if the output does not favor my case?

Why would they think so?

Why would You, the Attorney/ IP Counsel, have these questions in your mind?

Well, chances are, you might have burnt your hands one too many times in these situations-

• Output Does Not Meet Expectations – You expect good results in your search, and at the last moment, you find out there is nothing. The No Results Found
• No Intimation for Exceeding Deadline – You are waiting for the deliverable and don’t know when it will reach your inbox.
• Incomprehensive Output – After checking the output, you realize that your search vendor should have suggested you go for a non-English language search to locate better prior art, but now it’s too late. You see, ITC litigations don’t wait.
• Missing Useful information – Your search vendor doesn’t understand your environment well and provides you with the less relevant information or doesn’t share the additional information that can be of help to you in building your case or shares too many results with you while you expect a refined output with to the point information.
• Not Sharing Updates at Intermediate Intervals – You are expecting updates in between the project but getting nothing from your vendor. Or your vendor asked for a three-week timeline but started the project may be in the third week only and that’s why you didn’t receive any update.
• Substandard Results –
  • You are facing interpretation issues with your vendor and felt that your vendor wasn’t having a thorough understanding of the technology.
  • You or your end client found better results than your vendor.
  • You received prior art for which publication dates were not confirmed and later you found those arts to be irrelevant because of the date issues.

These are just a few of the infinite list of problems with search vendors. You might be thinking to yourself- If there was only a way to find a better search vendor!

You will find yourself one in a while, but a little change in terminology is needed.

You need to stop looking for a better search vendor. You must be looking for a better search partner.

The very word Vendor implies a vending machine approach. Something that we explained really well in this editorial piece and gave you a reason why one should not follow such an approach.

When looking for service providers for search related tasks, you should be looking for a partner, because Involvement is the key to finding success, as both parties strive to achieve a common goal. In this case, the goal could be – finding prior art to save the client from paying Millions in Royalties.

How to find a Better Search partner?

Well, if we answered that question with a “Stop Looking! You have already found us” this would qualify as a sales pitch, but we aren’t rolling that way.

Instead, we’d be sharing the situations which we faced internally while working with patent analysts and the learnings that we took from it, that helped us become better at what we do.

How would that help me, you ask?

The analogy of what we faced with patent analysts and what we did to resolve the issues might help you to judge and select your next search partner.

Let’s proceed, shall we?

Alright then.

We faced following type of situations with some of the analysts, who –

• Delivered unexpected output in the project and then the project manager had to go through a lot of hassle to rectify it and bring it back on track.
• Didn’t take responsibility for their work.
• Didn’t take work as their reputation.
• Had thought process to just deliver the task and never bothered to add extra value to it or brainstormed to improve on the existing level of output or made it easy for their project manager to deliver it.
• Didn’t want to spend extra effort to take their skills to next level.
• Didn’t bother if their output has killer results and moreover never initiated to suggest something.

Why were these issues important to us?

Just to give a background – our thought process is to keep client at highest priority and then the company and then the team and then individual needs. While moving ahead with this thought process, our intent is to always help the client with best results. We aim to provide solutions to help our clients prepare a better case which could help them taste success with their end clients.

Back on track, while facing the issues with some of the analysts, we thought maybe it is an issue of intellect or skill set.

So we did some digging and after evaluation, we identified that it is happening even with people who are from premium colleges, are intelligent and have the right skillset. Then what could be the root cause of the problem?

In an effort to ascertain the reason, we identified that the issue was in Thought Process. These analysts even though had high intellect, the right skill set and technical background, were not meeting the expectation simply for one reason – They carried a different vision and their mindset wasn’t aligned with the vision and objective of the company.

This became clearer when we evaluated the reason behind the performance of researchers who excelled. On comparing the performers and non-performers, we understood that a major contributing factor for enhanced performance and exceeded expectation was like-mindedness, understanding of the vision and their passion to grow quickly.

We changed our hiring process to move towards finding right fit analysts and put our finding to test.

Want to know how it worked?

To simply put – Even we were thrilled by the performance of next batch of analysts.

Hence, we applied our learning from internal environment to external environment and deduced that even in client relationship it is very important to work with people having the right mindset, who understand the requirements with the same level of responsibility, with similar caution to maintain reputation and with similar desire to grow fast.

In fact, collaborating with people who have similar thought process gives you an edge. If you want to give a very high-quality work to your client and your vendor partner also thinks in a similar manner, the cards would be in your favor.

Conclusion

To sum it up, when looking for the next better search partner, find a provider who has the right mindset, understands your requirements with the same level of responsibilities and shares your vision to fulfill client’s needs.

And if you’re wondering where you can find such a partner? Look no further, let us impress you over a call:

To Winning!

Authored by: Shikhar Sahni, AVP, Operations and Vincy Khandpur, Senior Research Analyst, Infringement.